Broadcom Corporation v. Emulex Corporation

MEMORANDUM in Opposition to MOTION IN LIMINE to Preclude Broadcom From Relying on the Report & Reverse Engineered Schematics Provided

C.D. Cal.August 1, 2011

1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING WILLIAM F. LEE (admitted pro hac vice) (william.lee@wilmerhale.com) DOMINIC E. MASSA (admitted pro hac vice) (dominic.massa@wilmerhale.com) JOSEPH J. MUELLER (admitted pro hac vice) (joseph.mueller@wilmerhale.com) WILMER CUTLER PICKERING HALE AND DORR LLP 60 State Street Boston, MA 02109 Telephone: (617) 526-6000 Facsimile: (617) 526-5000 Attorneys for Plaintiff and Counterclaim Defendant BROADCOM CORPORATION (Additional Counsel Listed on Signature Page) UNITED STATES DISTRICT COURT CENTRAL DISTRICT OF CALIFORNIA SOUTHERN DIVISION BROADCOM CORPORATION, Plaintiff, v. EMULEX CORPORATION, Defendant. CASE No. SACV09-01058-JVS (ANx), consolidated SACV10-03963-JVS (ANx) BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE TO PRECLUDE BROADCOM FROM RELYING ON THE REPORT AND REVERSE ENGINEERED SCHEMATICS PROVIDED BY NANCY ZHANG Hearing Date: August 15, 2011 Time: 11:00 a.m. Courtroom: 10C Before Hon. James V. Selna PUBLIC, REDACTED VERSION And Related Counterclaims Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 1 of 19 Page ID #:17004 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - i - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING Table of Contents I. Introduction .......................................................................................................1 II. Argument ...........................................................................................................3 A. The Reverse Engineered Schematics Are Admissible.................................3 1. Accuracy of the Schematics .........................................................................4 2. Materiality of the Schematics ......................................................................9 3. Best Available Evidence of BE2 Circuitry ................................................10 4. Equitable Considerations ...........................................................................11 B. Broadcom’s Experts May Properly Rely Upon The Reverse Engineered Schematics In Forming Their Opinions .....................................................13 III. Conclusion........................................................................................................15 Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 2 of 19 Page ID #:17005 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - ii - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING Table of Authorities Federal Cases Dal-Tile Corp. v. United States, 28 Ct. Int'l Trade 358, 400 (Ct. Int'l Trade 2004) ..................................................................... 12 Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 596 (1993).......................................................................................................... 14 Huezo v. Los Angeles Cmty. Coll. Dist., No. CV04-9772-MMM-JWJx, 2007 U.S. Dist. LEXIS 100116, at *16 (C.D. Cal. Mar. 2, 2007) ......................................................................................................................................... 13 Inline Connection Corp. v. AOL Time Warner Inc., 470 F. Supp. 2d 435, 439 (D. Del. 2007)............................................................................. 13-14 Lang v. Cullen, 725 F. Supp. 2d 925, 953 (C.D. Cal. 2010) .............................................................................. 13 Medtronic, Inc. v. Boston Scientific Corp., Civ. No. 99-1035-RHK-FLN, 2002 U.S. Dist. LEXIS 28355, at *7 (D. Minn. Aug. 8, 2002) .............. 14 Monsanto Co. v. David, 516 F.3d 1009, 1015-16 (Fed. Cir. 2008) ................................................................................. 13 Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1142 (9th Cir. 1997) ........................................................................................ 13 Federal Rules Fed. R. Evid. 703 .......................................................................................................................... 13 Fed. R. Evid. 807 ......................................................................................................................... 3-4 Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 3 of 19 Page ID #:17006 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 1 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING I. Introduction By its motion, Emulex seeks to exclude the best available evidence showing the structure of the accused BladeEngine 2 (“BE2”) application-specific integrated circuit (“ASIC”) product—namely, schematics depicting the layout of circuitry in the BE2. This evidence should be admitted, or, at the very least, Broadcom’s experts should be permitted to offer opinions based on it because it is the type of evidence on which technical experts reasonably rely. Broadcom’s experts have opined in their reports (and would testify at trial) that the schematics are consistent with other evidence regarding the features and functionality of the BE2 ASIC, and neither Emulex nor its experts have identified any portion of the schematics as inaccurately depicting the BE2 circuitry. This is not evidence disclosed to Emulex at the eleventh hour; quite the contrary. Broadcom began receiving reverse-engineered schematics of Emulex’s BE2 ASIC from the reverse-engineering firm Cellixsoft in July, 2010. Broadcom produced interim versions of these reverse-engineering schematics to Emulex in its amended infringement contentions for the ’194 patent family on July 30, 2010— nearly a year ago—and produced the final versions of the complete schematics ten months ago, on September 23, 2010. Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 4 of 19 Page ID #:17007 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 2 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING This is consistent with the pattern of “willfully blind” behavior that Broadcom demonstrated in its opposition to Emulex’s Partial Motion for Summary Judgment of No Willfulness. The Court denied that motion, finding that “a jury could find that Emulex knew or should have known it was infringing.” (Dkt. No. 401 at 4.) Here, Emulex again has turned its back on its own infringement—and as a consequence is foreclosed from arguing that the schematics are inaccurate. In the absence of a specific, concrete challenge to the authenticity or accuracy of the schematics, Emulex’s motion is replete with attorney argument regarding what is reasonably relied upon by experts in the field, what the process of “reverse-engineering” involves, and a number of other factual issues—all without any expert or evidentiary support. In contrast, two of Broadcom’s experts have specifically opined that they have relied on reverse-engineering schematics in the past, and that the schematics themselves are of the type that may reasonably be relied upon by experts in their field. Emulex leans heavily on this Court’s order striking the expert report of Nancy Zhang (because Broadcom did not identify her in its initial expert disclosures). But Emulex conflates the admissibility of the schematics and Broadcom’s technical experts’ opinions based on the schematics, on the one hand, with the Court’s exclusion of the expert report of Ms. Zhang, on the other. This conflation is wrong: Broadcom will abide by the Court’s order and will not attempt to have Ms. Zhang present any expert opinions at trial. But even without testimony by Ms. Zhang, Broadcom’s experts may rely on the schematics provided by Cellixsoft, and the schematics themselves are admissible. Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 5 of 19 Page ID #:17008 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 3 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING II. Argument In these unusual circumstances— —the reverse-engineering schematics should be admitted under the residual hearsay exception of Federal Rule of Evidence 807. Even if not admitted, these schematics qualify as the type of evidence on which technical experts in this field reasonably rely, and Broadcom’s experts should be permitted to opine based on the schematics pursuant to Federal Rule of Evidence 703. A. The Reverse Engineered Schematics Are Admissible. In arguing against the admissibility of the BE2 schematics, Emulex contends (1) they are inadmissible hearsay and (2) a foundation showing their relevance cannot be established by Ms. Zhang, because of the Court’s order precluding Ms. Zhang from testifying as an expert. (See Emulex Br. at 4-5.) But as explained below, the hearsay rule does not preclude admission of the schematics, and Broadcom’s experts have clearly demonstrated their relevance. Rule 807 allows for admission of hearsay documents “not specifically covered by Rule 803 or 804 but having equivalent circumstantial guarantees of trustworthiness,” if the Court determines that: (A) the statement is offered as evidence of a material fact; (B) the statement is more probative on the point for which it is offered than any other evidence which the proponent can procure through reasonable efforts; and (C) the general purposes of these rules and the interests of justice will best be served by admission of the Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 6 of 19 Page ID #:17009 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 4 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING statement into evidence. However, a statement may not be admitted under this exception unless the proponent of it makes known to the adverse party sufficiently in advance of the trial or hearing to provide the adverse party with a fair opportunity to prepare to meet it, the proponent's intention to offer the statement and the particulars of it, including the name and address of the declarant. Fed. R. Evid. 807. The Cellixsoft schematics meet each prong of this test. 1. Accuracy of the Schematics 1 As noted above, this head-in-the-sand approach is consistent with Emulex’s “willfully blind” pattern of conduct, which supports Broadcom’s willful infringement and inducement claims. The relevance of the reverse-engineering schematics to Emulex’s state of mind is further reason for admitting them at trial. Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 7 of 19 Page ID #:17010 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 5 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING (Ex. B [Stojanovic Init. Rep., Ex. F] at 1 (citing Emulex technical document).) Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 8 of 19 Page ID #:17011 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 6 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 9 of 19 Page ID #:17012 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 7 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING (Id. at 3 (citing reverse-engineering schematics).) Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 10 of 19 Page ID #:17013 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 8 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING (Id. at 7.) Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 11 of 19 Page ID #:17014 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 9 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING Thus, the first requirement of Rule 807 is met. 2. Materiality of the Schematics The schematics are offered as evidence of material facts involving Emulex’s BE2 ASIC. The second requirement of Rule 807 is met. Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 12 of 19 Page ID #:17015 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 10 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING 3. Best Available Evidence of BE2 Circuitry The schematics are more probative regarding the structure of Emulex’s BE2 ASIC than any other evidence that Broadcom could have procured through reasonable efforts. Given Emulex’s foot-dragging, discovery related to the BE2 ASIC could not and did not commence until approximately October 2010. Even after that date, Emulex never produced any schematics for the BE2—and it has not done so to this day (despite repeated requests by Broadcom). (See Ex. H [Fair Dep.] at 156:25- 157:8 (renewing request for Emulex to produce schematics for the BE2).) Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 13 of 19 Page ID #:17016 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 11 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING which does not permit document discovery for U.S. civil litigation. (See Ex. K [State Department Website, http://travel.state.gov/law/judicial/judicial_678.html] (“Japan is not a party to the Hague Convention on the Taking of Evidence Abroad in Civil and Commercial Matters … Compulsion of Documents and Other Physical Evidence: Japan has advised the United States that Japanese law does not include any provision for compulsion of documents or other physical evidence except in criminal cases.”). , and Japan’s laws prohibit document discovery in relation to U.S. civil litigations, Broadcom had no way of obtaining the formal circuit diagrams for the BE2. In the absence of those schematics, the reverse-engineered schematics are the best available evidence of the BE2 circuitry. The third requirement of Rule 807 is met, as the reverse-engineered schematics are more probative of the structure of the BE2 ASIC than any other evidence that Broadcom could have procured through reasonable efforts. 4. Equitable Considerations The general purposes of the Rules of Evidence and the interests of justice will best be served by admission of the schematics into evidence. Emulex’s motion does not dispute the authenticity or factual accuracy of the schematics themselves. Allowing Emulex to prevent the introduction of these schematics— s—after having stalled Broadcom’s efforts at obtaining discovery into the circuitry depicted in these schematics, would not be in the interest of justice. Thus, the fourth requirement of Rule 807 is met. Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 14 of 19 Page ID #:17017 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 12 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING Moreover, Broadcom disclosed the schematics to Emulex sufficiently in advance of the trial to provide Emulex with a fair opportunity to prepare to dispute them (though it has not). See, e.g., Dal-Tile Corp. v. United States, 28 Ct. Int’l Trade 358, 400 (Ct. Int’l Trade 2004) (“[Opposing party] was not harmed because it had ample opportunity to examine and respond to the evidence during discovery after the documents were obtained…[I]t is preferable to consider Rule 807’s notice requirement flexibly so as not to bar admission in the absence of prejudice.”). Broadcom included the schematics in its final infringement contentions, served on February 4, 2011, and in the initial expert reports of Drs. Fair and Stojanovic, served on April 19, 2011. (See Ex. L [Broadcom Corporation’s Final Disclosure of Asserted Claims and Infringement Contentions, Feb. 4, 2011 at Exhs. G, K, O(I), R.]; Ex. M [Fair Init. Rep.] ¶¶ 72-76; Ex. Q [Fair Init. Rep., Ex. F]; Ex. A [Stojanovic Init. Rep.] ¶¶ 132-165; Ex. B [Stojanovic Init. Rep., Ex. F].) Moreover, Broadcom had already produced interim versions of the schematics in connection with its infringement contentions for the ’194 patent family on July 30, 2010, and produced the final versions of the complete schematics to Emulex on September 23, 20102, well before the close of fact discovery. Further, Broadcom disclosed Cellixsoft and Nancy Zhang in supplemental initial disclosures served on February 22, 2011. (Ex. N [Broadcom Corporation’s Second Supplemental Rule 26(a)(1) Initial Disclosures, Feb. 22, 2011] at 4, 13.) * * * Broadcom has thus met every requirement of Rule 807, and the schematics themselves should be admitted into evidence. 2 Broadcom produced the schematics yet again on March 29, 2011, along with additional schematics. None of the additional schematics produced after September 23, 2010 were relied upon by Broadcom’s experts to show infringement. Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 15 of 19 Page ID #:17018 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 13 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING B. Broadcom’s Experts May Properly Rely Upon The Reverse Engineered Schematics In Forming Their Opinions Even if the Cellixsoft schematics were not admitted into evidence, Rule 703 permits experts to rely on otherwise inadmissible “facts or data … made known to the expert at or before the hearing” so long as they are “of a type reasonably relied upon by experts in the particular field in forming opinions or inferences upon the subject.” Fed. R. Evid. 703. As both Dr. Fair and Dr. Stojanovic confirmed, the schematics are precisely this type of evidence. Experts may properly base their opinions on otherwise inadmissible evidence, even if prepared by others, and cross-examination—not a motion in limine—is the appropriate means of challenging such expert opinions. Southland Sod Farms v. Stover Seed Co., 108 F.3d 1134, 1142 (9th Cir. 1997) (“The fact that [an expert’s] opinions are based on data collected by others is immaterial; Federal Rule of Evidence 703 expressly allows such opinion testimony.”); Monsanto Co. v. David, 516 F.3d 1009, 1015-16 (Fed. Cir. 2008) (“[N]umerous courts have held that reliance on scientific test results prepared by others may constitute the type of evidence that is reasonably relied upon by experts for purposes of Rule of Evidence 703 . . . .[Defendant’s expert’s] testimony is admissible, regardless of the admissibility of the seed report.”); Lang v. Cullen, 725 F. Supp. 2d 925, 953 (C.D. Cal. 2010) (citing Southland Sod Farms, 108 F.3d at 1142) (same); Huezo v. Los Angeles Cmty. Coll. Dist., No. CV04-9772-MMM-JWJx, 2007 U.S. Dist. LEXIS 100116, at *16 (C.D. Cal. Mar. 2, 2007) (“[An expert’s] declaration, which relies in part on ‘facts and data’ gathered by his associates as well as on information provided by plaintiff’s counsel, is competent expert testimony.”); Fed. R. Evid. 703. The Court in Inline Connection Corp. v. AOL Time Warner Inc., 470 F. Supp. 2d 435, 439 (D. Del. 2007) explained Rule 703 at length: Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 16 of 19 Page ID #:17019 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 14 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING FRE 703 impacts the ‘disclosure of information that is reasonably relied on by an expert, when that information is not admissible for substantive purposes.’ In balancing probative verses prejudicial, the court may consider the ‘opportunity for an expert to be cross-examined, and the ultimate disclosure of the weight of information reasonably relied upon.’ A court should not consider the strength or weakness of the basis of an expert’s testimony, because ‘[r]ule 705, together with rule 703, places the burden of exploring the facts and assumptions underlying the testimony of an expert witness on opposing counsel during cross-examination.’ ‘When the factual underpinning of an expert’s opinion is weak, it is a matter affecting the weight and credibility of the testimony-a question to be resolved by the jury.’ Id. (emphases in original); see also Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579, 596 (1993) (“Vigorous cross-examination [and the] presentation of contrary evidence … are the traditional and appropriate means of attacking shaky but admissible evidence.”); Medtronic, Inc. v. Boston Scientific Corp., Civ. No. 99- 1035-RHK-FLN, 2002 U.S. Dist. LEXIS 28355, at *7 (D. Minn. Aug. 8, 2002) (“Fed. R. Evid. 702 is generally one of inclusion rather than exclusion.”) (relying on Daubert, 509 U.S. at 596). Emulex asserts that the Zhang report is lacking certain elements, such as the identity of the specific engineers at Cellixsoft who performed the reverse- Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 17 of 19 Page ID #:17020 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 15 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING engineering, and that engineers in the field wound not rely on it.3 (Motion at 5.) This again conflates the Zhang report with the schematics themselves. Moreover, Emulex provides no support for its assertion other than attorney argument. On the other hand, both Dr. Fair and Dr. Stojanovic have themselves opined—as experts, not lawyers—that the schematics Instead, Emulex chose to put its head in the sand. Emulex has been in possession of the schematics for approximately ten months, has had Broadcom’s infringement contentions based upon the schematics for over five months, and had the opportunity to depose Broadcom’s experts regarding their opinions based on the schematics. Emulex may cross-examine Broadcom’s experts on the factual underpinnings of their opinions at trial. But Emulex may not preclude Broadcom’s experts from relying on evidence that is of the type reasonably relied upon by experts in the field, and which Emulex has failed to rebut with any evidence other than speculative and conclusory attorney argument. III. Conclusion For the foregoing reasons, the reverse-engineered schematics should be admissible under Fed. R. Evid. 807 or, at a minimum, Broadcom’s experts may 3 Emulex also argues that Ms. Zhang is not a person of ordinary skill in the art because she was trained in chemical engineering. But Ms. Zhang’s report was not directed to the contents of the schematics—indeed, the schematics speak for themselves—but rather to describing Cellixsoft’s process for creating such schematics, a topic for which she is well qualified as a customer manager. Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 18 of 19 Page ID #:17021 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 17 18 19 20 21 22 23 24 25 26 27 28 - 16 - BROADCOM’S OPPOSITION TO EMULEX’S MOTION IN LIMINE RE: REVERSE ENGINEERING properly rely on the schematics for their opinions pursuant to Fed. R. Evid. 703. Broadcom respectfully requests that the Court deny Emulex’s motion. Dated: July 22, 2011 WILMER CUTLER PICKERING HALE AND DORR LLP By: _________________________ Michael D. Jay Attorneys for Plaintiff and Counterclaim Defendant BROADCOM CORPORATION US1DOCS 8005427v3 Case 8:09-cv-01058-JVS -AN Document 680 Filed 08/01/11 Page 19 of 19 Page ID #:17022